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When Can I Use Another Company’s Trademark?

So you run a business dealing with and/or servicing other companies who have registered trademarks? Always make sure you are not using those companies’ trademarks in an infringing manner, or you may find a cease-and-desist letter in your mail one day.

One goal achieved by a registered trademark is to give the owner of the trademark control over how his trademark is perceived by the marketplace with regards to associations. To illustrate, we can look to “VW” and “Volkswagen”, marks that are registered on the US federal trademark registry. If you are Volkswagen, which not only sells cars at VW dealerships but also earns considerable revenue from servicing VW vehicles, you might not be happy about the mechanic who hangs a giant “VW” logo above his garage, followed by the words “repair shop.” On the other hand, a federal appeals court in California upheld the use of “Volkswagen” and “VW” marks by a mechanic who operated a garage specializing in the servicing of Porshes and Volkswagens.

Context is important. The court heavily based its opinion on the fact that the mechanic consistently used the word “independent” whenever he advertised his business as an “Independent Volkswagen Porsche Service.” Because of this, the court found in favor of the mechanic, ruling that the mechanic’s “prominent use of the word ‘Independent’ whenever the terms ‘Volkswagen’ or ‘VW’ appeared in his advertising was sufficient to distinguish his business to the eye of the customer.” Volkswagen Aktiengesellschaft v. Church, 411 F.2d 350 (9th Cir. 1969).

Thus, business owners are not entirely prohibited from all uses of another company’s trademark. However, in order to do so, the use of the trademark must fall into an exception for use of another’s mark. Uses which are likely to confuse consumers as to the source of the product which the mark is attached to are more likely to be prohibited, while uses which are merely informative (such as the above example or when used in conversation to identify a company) are more likely to be permitted uses.

This depends greatly on how you are using the car-makers’ logos in your advertising. In a general sense, simply “naming the ingredients” of what you offer customers is not a problem. However, if your advertisement even has a chance of being interpreted as containing an endorsement of you company by the car-makers, this can be problematic. To illustrate, an ice-cream sandwich producer likely wouldn’t have a problem saying “We make our ice cream sandwiches with Dreyer’s ice cream”, but they are crossing the line if they advertise “Dreyer’s for the best ice cream sandwiches”. Would be happy to discuss by email: ck@cliffkuehn.com.